Ex Parte Sanders et al

Board of Patent Appeals and Interferences

Sep 28, 2010

11095947 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/095,947 03/31/2005 Roy Sanders 1671-0326 2199
28078 7590 09/29/2010
MAGINOT, MOORE & BECK, LLP
CHASE TOWER
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
WOODALL, NICHOLAS W
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
09/29/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROY SANDERS, PRIYA PRASAD,
and CHRIS BREMER
____________

Appeal 2009-008433
Application 11/095,947
Technology Center 3700
____________

Before: LINDA E. HORNER, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008433
Application 11/095,947

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STATEMENT OF THE CASE
Roy Sanders et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 2, 3, 6, 7, and 13-25,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.
THE INVENTION
Appellants’ claimed invention relates to fixation devices for reducing
fractures of the neck of the talus. Spec. 1, para. [001]. Claim 13,
reproduced below, is representative of the subject matter on appeal.
13. A fixation device for fixation of fractures of the talus bone
of the foot comprising:
a plate having a lower wing configured for attachment to
the lateral aspect of the talus and an upper wing configured for
attachment to the dorsal aspect of the talus;
said plate including a first bend region between said
lower and upper wings configured so that said upper wing is
oriented at an angle relative to said lower wing so that said
lower and upper wings can be simultaneously in substantially
uniform contact with the talus;
said plate further defining a plurality of holes in each of
said lower wing and upper wing, each of said holes configured
to receive a bone engaging fastener therethrough for attachment
of said plate to the talus; and
said upper wing including a second bend region in which
a bent portion of said plate carrying at least one of said plurality
of holes is bent away from said lower wing,
wherein said first bend region has a width that is less than
the largest width of either of said wings,
wherein said upper wing includes a step portion between
said first bend region and said second bend region, said step
portion including at least one of said plurality of holes, and
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Application 11/095,947

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wherein said first bend region and said second bend
region are on adjacent sides of the step portion.
THE REJECTIONS
Appellants seek review of the following Examiner’s rejections:
1. Rejection of claims 6, 13-15, 18, 21, and 22 under 35 U.S.C. § 102(e) as
anticipated by Masini (US 2006/0089648 A1, published Apr. 27, 2006).
2. Rejection of claims 2, 3, 7, 16, 17, 19, 20, and 23-25 under 35 U.S.C.
§ 103(a) as unpatentable over Masini.
ISSUES
The issues presented by this appeal are:
1. Does Masini disclose a fixation device having first and second bend
regions on adjacent sides of the step portion, as called for in independent
claim 13?
2. Does Masini disclose a bone plate having an upper wing extending
along a first plane and a lower wing extending along a third plane, such that
the intersection of the first and third planes defines a line that intersects the
bend axis between the step portion and the upper wing, as called for in
independent claim 14?
3. Does Masini disclose a bone plate having a lower wing extending along
a first plane, a step portion extending along a second plane, and an upper
wing extending along a third plane so that the intersection of the first and
second planes defines a first bend axis and the intersection of the second and
third planes defines a second bend axis which intersects the first bend axis,
as called for in independent claim 21?
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Application 11/095,947

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ANALYSIS
Rejection of claims 6, 13-15, 18, 21, and 22 under 35 U.S.C. § 102(e) as
anticipated by Masini
Claims 6 and 13
Independent claim 13 is directed to a fixation device that calls for a
first bend region and a second bend region “on adjacent sides of the step
portion.” Appellants’ Specification describes talus fixation device 30 having
a first bend portion 40 that connects lower wing 33 to step portion 38, and
second bend portion 42 that connects bent tab 44 to step portion 38. Spec. 9-
10, paras. [036] – [037]; fig. 8. Appellants’ Figure 8 depicts first bend
portion 40 and second bend portion 42 attached to adjoining sides of step
portion 38. Spec. fig. 8.
The Examiner interprets “adjacent,” as used in claim 13, to mean that
the first and second bend portions are “near or close, but not necessarily
touching” each other. Ans. 7-8 (applying a definition provided by
Appellants). Based on this claim interpretation, the Examiner found that
Masini discloses a first bend region (the unlabeled area of articulation
connecting first portion 602 to articulating portion 612)) that is near or close
to a second bend region (the unlabeled area of articulation connecting
articulating portions 612 and 614)2. Ans. 3-4, 7-8.
We agree with Appellants that the Examiner misconstrued claim 13.
App. Br. 6-10; Reply Br. 2-3. While the term “adjacent” may encompass
two regions that are not necessarily touching, the term is not as broad as to
include regions on opposite sides of the step region. The Examiner’s
interpretation is unreasonably broad in that it covers the first and second

2 See Masini 2, para. [0036]; fig. 6.
Appeal 2009-008433
Application 11/095,947

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bend regions being on opposite sides of the step portion. Such an
interpretation effectively reads the word “adjacent” out of claim 13. Our
conclusion is supported by Appellants’ disclosure in the Specification,
which shows the bend regions on adjoining sides of the step portion.
Hence, Masini does not anticipate claim 13. Masini also does not
anticipate claim 6 by virtue of its dependence from claim 13.
Claims 14, 15, and 18
Independent claim 14 is directed to a bone plate having a lower wing
extending along a first plane and an upper wing extending along a third
plane such the intersection of the first and third planes defines a line that
intersects the bend axis defined as between the step portion and the upper
wing.
The Examiner found that Masini discloses a bone plate having an
upper wing (articulating portion 614) extending along a plane and a lower
wing (first portion 602) extending along a plane such that those planes
intersect to define a line that intersects the bend axis between the step
portion and the upper wing (the unlabeled area of articulation connecting
articulating portions 612 and 614). Ans. 43.
Masini’s Figure 6, as annotated by Appellants and with labels added
for the portions corresponding to the wings and the step portion is
reproduced below (App. Br. 12):

3 The Examiner annotates Figure 6 of Masini (Ans. 5), but mistakenly refers
to it as Figure 1 (Ans. 4).
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Application 11/095,947

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Figure 6 of Masini, as annotated, illustrates that the line defined by the
intersection of the planes defined by Masini’s upper and lower wings is a
line that is parallel to Masini’s bend axis, and therefore that line does not
intersect the bend axis.
For these reasons, Masini does not anticipate claim 14. Further,
Masini does not anticipate claims 15 and 18 by virtue of their dependence
from claim 14.
Claims 21 and 22
Independent claim 21 is directed to a bone plate comprised of a lower
wing extending along a first plane, a step portion extending along a second
plane, and an upper wing extending along a third plane, so that the
intersection of the first and second planes forms a first bend axis and the
intersection of the second and third planes forms a second bend axis which
intersects the first bend axis.
The Examiner found that Masini discloses a bone plate having a lower
wing (first portion 602) extending along a first plane, a step portion
(articulating portion 612) extending along a second plane, and an upper wing
(articulating portion 614) extending along a third plane so that the
intersection of the first and second planes forms a first bend axis (the
unlabeled area of articulation connecting first portion 602 to articulating
portion 612) and the intersection of the second and third planes forms a
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Application 11/095,947

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second bend axis which intersects the first bend axis (the unlabeled area of
articulation connecting articulating portions 612 and 614). Ans. 4-5, 8-9.
This finding is based in part on the Examiner’s interpretation that the
“bend axis” can be “any axis extending through a bend region of the
device.” Ans. 9. This interpretation is contrary to the language of claim 21,
which defines the first bend axis as the intersection of the first plane, as
defined by the lower wing, and the second plane, as defined by the step
portion. Thus, the first bend axis is the line defined by the intersection of
first and second planes, and is not “any axis extending through a bend region
of the device” as the Examiner found.
Appellants assert, and we agree, that Masini’s bend axes are parallel
and therefore cannot intersect as called for in claim 21. Masini, fig. 6.
Masini’s Figure 6, as annotated by Appellants, and with labels added for the
portions corresponding to the wings and the step portion is reproduced
below (App. Br. 14):

Figure 6 of Masini illustrates that the lines defined by the first and second
bend axes are parallel and therefore do not intersect as called for in claim 21.
Thus, Masini does not anticipate claim 21. Masini also does not anticipate
claim 22 by virtue of its dependence from claim 21.
Appeal 2009-008433
Application 11/095,947

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Rejection of claims 2, 3, 7, 16, 17, 19, 20, and 23-25 under 35 U.S.C.
§ 103(a) as unpatentable over Masini
Claims 2, 3, and 7 depend from independent claim 13. Claims 16, 17,
19, and 20 depend from independent claim 14. Claims 23-25 depend from
independent claim 21. The rejection of claims 2, 3, 7, 16, 17, 19, 20, and
23-25 under 35 U.S.C. § 103(a) as unpatentable over Masini relies upon the
same underlying errors explained in the analysis of claims 13, 14, and 21 as
anticipated by Masini, supra. Thus, the rejection of claims 2, 3, 7, 16, 17,
19, 20, and 23-25 is also in error for the reasons discussed above.
CONCLUSIONS
Masini does not disclose a fixation device having first and second bend
regions on adjacent sides of the step portion, as called for in independent
claim 13.
Masini does not disclose a bone plate having an upper wing extending
along a first plane and a lower wing extending along a third plane, such that
the intersection of the first and third planes defines a line that intersects the
bend axis between the step portion and the upper wing, as called for in
independent claim 14.
Masini does not disclose a bone plate having a lower wing extending
along a first plane, a step portion extending along a second plane, and an
upper wing extending along a third plane so that the intersection of the first
and second planes defines a first bend axis and the intersection of the second
and third planes defines a second bend axis which intersects the first bend
axis, as called for in independent claim 21.
DECISION
We REVERSE the Examiner’s decision to reject claims 2, 3, 6, 7, and
13-25.
Appeal 2009-008433
Application 11/095,947

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REVERSED

nlk

MAGINOT, MOORE & BECK, LLP
CHASE TOWER
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS IN 46204